On Thursday, June 11, 2020, the PTAB designated one decision as precedential and three decisions as informative, on issues including: 1) the statutory scope of confidential settlement agreements, 2) design patent ornamentality, 3) terminating a proceeding having a pending motion to amend, and 4) use of confidential information at a hearing.

DTN, LLC v. Farms Technology, LLC (precedential)

The Patent Trial and Appeal Board (“the Board”) clarified that any agreements referenced in the settlement agreement under 35 U.S.C. § 317(b) are subject to the statute’s mandatory filing requirement.  DTN, LLC v. Farms Tech., LLC, IPR2018-01412 and IPR2018-01525, Paper 21 (June 14, 2019) (“IPR2018-01412”).

In DTN, the parties filed a Joint Motion to Terminate the proceeding.  See 35 U.S.C. § 317.  Pursuant to the statute, the parties filed their written settlement agreement, which also referenced two additional agreements (“collateral agreements”).  IPR2018-01412 at 5-6.  The settlement agreement was between patent owner and petitioner; however, patent owner was not a party to either collateral agreement.  Id.  Therefore, the issue was whether the collateral agreements were subject to the filing requirement of § 317(b), where the collateral agreements are not between patent owner and petitioner, and the collateral agreements were not made in connection with, or in contemplation of, the termination of the existing IPR proceeding.  Id. at 5, 9.

The Board held that collateral agreements must be filed in this situation, basing its determination on the statutory language and policy underlying § 317(b).  Section 317(b) states:

[a]ny agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties.

(Emphasis added.)  Starting with the statutory language, the Board determined that “§ 317(b) does not limit the ‘collateral agreements’ to agreements that are between the patent owner and petitioner [because] the term ‘any’ means ‘any,’ so the collateral agreements need not be between the patent owner and petitioner to fall under the ambit of the statute.”  Id. at 6.  The Board added that it is “sufficient for a collateral agreement … to be referred to in an agreement between the [parties]” to trigger the statute’s mandatory filing requirement.  Id.

Turning to the policy argument, the Board asserted that interpreting § 317(b) to allow the collateral agreements to avoid the filing requirement “would frustrat[e] the purpose of the statute” and “insulate [those agreements] from review by ‘Federal Government agencies on written request’ or ‘any person on a showing of good cause.’”  Id. at 8.


Sattler Tech Corp., v. Humancentric Ventures, LLC (informative)

In Sattler, the Board instituted PGR of a design patent related to a VESA mount adapter bracket (a bracket with standard wall-mounting features).  Sattler Tech Corp., v. Humancentric Ventures, LLC, PGR2019-00030, Paper 9, (July 26, 2019).  Petitioner’s sole challenge is that the claim of the design patent (D823,093 S) lacks ornamentality, which is a required feature of a design patent under 35 U.S.C. § 171.  PGR2019-00030 at 5.

The Board determined that the claimed design, which included tabs and grommets, was dictated by its function.  Id. at 17; see also id. at 7 (describing the legal standard for invalidating a design patent).  Specifically, the Board agreed with Petitioner that the “spacing, size, shape, and angle of the tabs are dictated by their function to attach to the back of certain monitors.”  Id.  Similarly, the Board agreed with Petitioner that the “spacing, size, and shape of the grommets are also dictated by their function.”  Id.  Accordingly, the Board held that “each of the individual elements of the claimed design appears to be dictated solely by function.”  Id. at 18.

Turning to the “overall appearance of the article,” the Board determined that “the claimed design for the adapter bracket as a whole appears primarily functional, rather than primarily ornamental” because “other mounting brackets contain the same individual elements of the claimed design as well as the same overall appearance of the bracket.”  Id.; see also id. at 7 (describing that the availability of alternative designs is important in assessing the functionality of the claimed design).

Accordingly, at this point in the proceeding, the Board determined that Petitioner has shown that it is more likely than not that the challenged claim is unpatentable for lacking ornamentality.


Kokusai Electric Corporation v. ASM IP Holding B.V. (informative)

The Board issued an Order granting a Joint Motion to Terminate the proceeding, without reaching a decision on a Motion to Amend.  Kokusai Electric Corp., v. ASM IP Holding B.V., IPR2018-01151, Paper 38 (Aug. 20, 2019).

In Kokusai, the parties filed a Joint Motion to Terminate, also requesting that the Board “grant-in-part the pending unopposed Motion to Amend.”  IPR2018-01151 at 2.  The parties asserted that the “Board has authority to decide a motion to amend before terminating a proceeding pursuant to 37 C.F.R. §§ 42.71(a) and 42.72 and 35 U.S.C. § 317(a).”  Id.  However, the Board determined that it was “appropriate to terminate this proceeding without rendering a final written decision or a decision on the Motion to Amend.”  Id. at 4.  Specifically, the Board determined that “[a] decision on Patent Owner’s Motion to Amend … requires a determination as to the patentability of the substitute claims.”  Id.; see also 35 U.S.C. § 318(a) (describing that “[i]f an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d)” (emphasis added)).

The Board noted that although it determined that it could not issue amended claims in the absence of a final written decision, the Patent Owner could still file a reissue application or a request for reexamination to amend the claims.  Id. at 5.  See also April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding.


Curt G. Joa, Inc., v. Fameccanica.Data S.P.A. (informative)

In Joa, the Board issued an Order regarding the conduct of proceedings in which parties need to discuss confidential information.  Curt G. Joa, Inc., v. Fameccanica.Data S.P.A., IPR2016-00906, Paper 61 (June 20, 2017).

Specifically, the Order provided for:

  • A first session open to the public and a second session closed to the public, during which the parties will present their confidential information. IPR2016-00906 at 2.
  • Each side will have 60 minutes total to present its argument, with up to 30 minutes of the total time for the oral hearing to be closed to the public, i.e., each side will be given up to 15 minutes to present their confidential information. Id.
  • The parties will present their arguments in the same order as set in the open session. Id.
  • At the beginning of the hearing, either party may request to allocate more of its time to the open session. Id. at 3.  However, neither party will be given more than 15 minutes during the closed session, or more than 60 minutes total.  Id.
  • Time not used during the open session cannot be reserved for the closed session. Id.

Parties should not include any confidential information in any demonstrative exhibit; during the closed session, the parties may direct the panel to the specific confidential information in the record.  Id.